Click and Park, LLCv.Park On Line, Inc.

Trademark Trial and Appeal Board

Sep 24, 2009

No. 92049573 (T.T.A.B. Sep. 24, 2009)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

HELLA/BUTLER

Mailed: September 24, 2009

Cancellation No. 92049573
Click and Park, LLC
v.
Park On Line, Inc.
Before Walters, Walsh, and Ritchie, Administrative
Trademark Judges.

By the Board:

On June 26, 2008, Click and Park, LLC (“petitioner”)
filed a petition to cancel Park on Line, Inc.’s
(“respondent”) registration for the mark CLICK TO PARK
(typed drawing) for “parking lot services, namely, online
reservation of parking spaces for others.”1
As grounds for the cancellation, petitioner alleges
priority of use and likelihood of confusion, asserting a
date of first use anywhere and a date of first use in
commerce at least as early as September 4, 2003.

1 Registration No. 3335851, issued on November 13, 2007, claiming a
date of first use anywhere and a date of first use in commerce of
August 17, 2007. The underlying application which matured into the
registration was filed on September 9, 2003.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92049573
2
Petitioner pleads ownership of two pending applications for
the marks CLICK AND PARK.COM (stylized) for “parking space
reservation service; travel demand management services,
namely, providing customized driving instructions through
use of an online parking reservation system”2 and CLICK AND
PARK (standard character mark) for “parking space
reservation service; traffic management services, namely,
creating special event traffic plans for others; travel
demand management services, namely, providing customized
driving instructions through use of an online parking
reservation system.”3
In its petition to cancel, petitioner asserts that its
application for the stylized mark CLICK AND PARK.COM has
been refused registration based on a likelihood of
confusion with respondent’s registration. Petitioner
pleads its belief that its application for the mark CLICK
AND PARK will also be refused registration for the same
reasons.
In its answer, respondent admits that petitioner
purports to own the pleaded applications and that

2 Application Serial No. 77054446, filed on November 30, 2006, claiming
a date of first use anywhere and a date of first use in commerce at
least as early as November 2003.
3 Application Serial No. 77499904, filed on June 16, 2008, claiming a
date of first use anywhere and a date of first use in commerce at least
as early as September 4, 2003.

Cancellation No. 92049573
3
petitioner’s application Serial No. 77054446 was refused
registration. Respondent otherwise denies the essential
allegations of the petition to cancel. Respondent asserts
the affirmative defenses of laches and equitable estoppel.
Respondent further asserts that petitioner is estopped from
claiming use prior to November 2003 (the date of use
claimed in petitioner’s pending application Serial No.
77054446) and that respondent is entitled to priority as of
the September 9, 2003 filing date of its underlying
application.
In accordance with the Board’s order dated September
17, 2008, the discovery period was last set to close on
March 21, 2009. This case is now before the Board for
consideration of petitioner’s motion for summary judgment,
filed February 26, 2009. The motion is fully briefed.
In support of its motion, petitioner argues that
respondent failed to respond to its requests for admissions4
(“RFAs”) and that the admissions are therefore deemed
admitted under Fed. R. Civ. P. 36(a)(3). Petitioner notes
respondent did not respond to any of petitioner’s written
discovery requests. Petitioner contends that, by virtue of
respondent’s effective admissions, there are no genuine

4 Requests for admissions were served on respondent’s counsel January
16, 2009, and responses were due February 20, 2009.
Cancellation No. 92049573
4
issues of material fact with respect to petitioner’s
standing, petitioner’s priority, and petitioner’s claim of
likelihood of confusion between the parties’ marks, and
that, as a consequence, petitioner is entitled to judgment
as a matter of law. In particular, petitioner argues,
inter alia, that respondent effectively admitted the
following facts relevant to petitioner’s likelihood of
confusion claim:5
- petitioner is the prior user of its marks CLICK AND
PARK.COM and CLICK AND PARK (RFA Nos. 10, 11, 46,
and 47; see also RFA Nos. 1-9);
- respondent is not entitled to priority from any date
prior to September 9, 2003 (RFA No. 54);
- respondent is aware of actual confusion, mistake or
deception (RFA No. 22);
- the parties’ marks travel in similar channels of
trade, to similar classes of consumers, and in
similar geographic areas (RFA Nos. 23-27);
- respondent’s mark is visually and phonetically
identical to petitioner’s marks (RFA Nos. 31 and
33);

5 See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973).

Cancellation No. 92049573
5
- respondent’s services are similar to petitioner’s
services (RFA No. 28);
- the parties’ marks convey the same commercial
impression and have the same meanings (RFA Nos. 35
and 37);
- the conditions of sale of each party’s services
under its respective marks are similar (RFA No. 49);
and
- the sophistication of the consumers for each party’s
services under its respective marks is similar (RFA
No. 50.)
Petitioner’s first set of admissions are introduced by
an affidavit from its counsel, Michael Hudzinski, who also
attests to respondent’s failure to respond to any of
petitioner’s discovery requests.6
The day after petitioner’s motion for summary judgment
was filed, respondent’s counsel requested permission to
withdraw as attorney of record for respondent, informed the

6 The admissions regarding respondent’s abandonment of its mark and lack
of a bona fide intention to use the mark in commerce as of its filing
date are relied upon by petitioner, in part, with respect to its
argument that it has priority of use. However, because abandonment and
a lack of a bona fide intent to use are not claims pleaded by
petitioner, no consideration is given to petitioner’s reliance on the
requests for admission (Nos. 12 and 13) to the extent they are intended
to prove respondent has abandoned its mark and did not have a bona fide
intention to use its mark as of the filing date of the underlying
application. See Fed. R. Civ. P. 15(a); and TBMP 528.07(a) (2d ed.
rev. 2004).

Cancellation No. 92049573
6
Board that respondent intended to represent itself, and
requested an extension of time for respondent to respond to
the summary judgment motion. In an order dated May 6,
2009, the Board granted the request of respondent’s counsel
to withdraw as attorney of record and allowed respondent
additional time to respond to the summary judgment motion.
On June 8, 2009, respondent, proceeding pro se, filed its
response.
In its response, respondent disputes and denies the
substance of all of the requests for admissions relied upon
by petitioner in its motion for summary judgment.
Respondent further alleges that petitioner’s motion for
summary judgment is barred by laches and equitable estoppel
and that, as a consequence, petitioner cannot claim a
priority of use date before November 2003. Respondent’s
response is accompanied by a variety of attachments,
including: unspecified advertising, a copy of its
registration certificate, advertisements apparently from
petitioner’s website, TESS printouts of petitioner’s
pending applications, a copy of the Office Action refusing
registration to petitioner’s application Serial No.
77499904 under Trademark Act §2(d) based on respondent’s
registration, various correspondence from respondent to
Cancellation No. 92049573
7
third parties concerning parking reservations, and
respondent’s business plan.
On June 26, 2009, petitioner filed its reply to
respondent’s brief, arguing that respondent’s failure to
respond to petitioner’s requests for admission establishes
that no genuine issues of material fact exist with respect
to the substance of petitioner’s claims; that respondent
has not introduced any evidence contradicting the
admissions; that none of respondent’s exhibits were
supported by affidavit or deposition; and that respondent’s
brief was devoid of facts, properly supported evidence or
legal arguments that present a genuine issue of fact. With
respect to respondent’s arguments on its laches and
equitable estoppel affirmative defenses, petitioner argues
that respondent has not provided any evidence to support
its conclusory statements and that respondent has not
explained why these defenses apply.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Cancellation No. 92049573
8
Celotex Corp. v. Catrett, 477 U.S. 317 (1986). All
justifiable inferences to be drawn from the undisputed
facts must be viewed in the light most favorable to the
nonmoving party. See Opryland USA Inc. v. Great American
Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
1992). In considering the propriety of summary judgment,
the Board may not resolve issues of material fact; it may
only ascertain whether such issues are present. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993).
We find petitioner’s assertions regarding respondent’s
effective admissions to be well taken. Fed. R. Civ. P.
36(a)(3) provides that requests for admissions are deemed
admitted unless written answers or objections thereto are
received by the requesting party within 30 days of service
of the request for admissions. In this case, respondent
did not make any attempt to submit either its answers or
objections in a timely fashion to petitioner. Once the
admissions became effective for respondent’s failure to
serve timely responses, respondent had two options should
it have been interested in withdrawing or amending the
effective admissions: 1) file a motion to reopen its time
to serve responses showing that its failure to timely
respond was due to excusable neglect or 2) file a motion to
Cancellation No. 92049573
9
withdraw or amend its admissions pursuant to Fed. R. Civ.
P. 36(b). See Hobie Designs Inc. v. Fred Hayman Beverly
Hills Inc., 14 USPQ2d 2064 (TTAB 1990)(if a party upon whom
requests for admission have been served fails to timely
respond thereto, the requests will stand admitted unless
the party is able to show that its failure to timely
respond was the result of excusable neglect; or unless a
motion to withdraw or amend the admissions is filed
pursuant to, and granted by the Board). See also Giersch
v. Scripps Networks Inc., 85 USPQ2d 1306 (TTAB 2007).
Respondent failed to avail itself of either option and
cannot rely merely on "disputing" petitioner’s reliance on
the effective admissions as it did in its response.
In determining the issue of likelihood of confusion
and, in this case, whether there is any genuine issue of
material fact relating to the ultimate legal question, we
must consider the pertinent evidentiary factors listed in
In re E.I. du Pont de Nemours & Co., 476 F. 2d 1357, 177
USPQ 563 (CCPA 1973). Respondent, by its effective
admissions, has conceded the most significant factors of
the likelihood of confusion analysis.7

7 Respondent also effectively admitted conclusions of law, including
that there is a likelihood of confusion between the parties marks (RFA
Nos. 20 and 21). However, our determination, with respect to
petitioner’s priority of use and likelihood of confusion claims, is
based on respondent’s factual admissions.
Cancellation No. 92049573
10
First, by admitting that petitioner owns its asserted
applications and that one of these applications has been
refused registration based on respondent’s registration,
there are no genuine issues of material fact that
petitioner has established its standing.8
With regard to respondent’s CLICK TO PARK mark and
petitioner’s CLICK AND PARK.COM and CLICK AND PARK marks,
as mentioned earlier, respondent admitted that the parties’
marks are visually and phonetically identical and have the
same meaning. We note, too, that the marks are similar in
sound, appearance and connotation inasmuch as they share
the common terms CLICK and PARK in the same sequence
separated by a conjunction. Thus, no genuine issue of
material fact exists, and the parties’ marks are similar in
sight, sound and meaning.
Respondent further effectively admitted that the
parties’ services are the same and travel in the same
channels of trade. Each party’s recitation of services
indicates that both parties offer online parking
reservation services. Neither party has limited or
restricted its recitation in any way. Thus, there is no

8 The Board notes that a petitioner has standing in a cancellation
proceeding where the record establishes that its pleaded application
has been refused registration under Trademark Act §2(d) based on a
respondent’s involved registration. See Great Seats Ltd. v. Great
Seats, Inc., 84 USPQ2d 1235 (TTAB 2007).
Cancellation No. 92049573
11
genuine issue of material fact that the parties’ respective
services, as recited, are the same, at least in part, and
travel in the same channels of trade.
Based on applicant’s admissions and our analysis of
the Du Pont likelihood of confusion factors, and viewing
these facts in the light most favorable to respondent, we
conclude that there are no genuine issues of material fact
that a likelihood of confusion exists in this case.
Additionally, as a result of respondent’s admission
that petitioner has an earlier date of use, and, again,
viewing the facts in the light most favorable to
respondent, we conclude that there remain no genuine issues
of material fact that petitioner has established its
priority.
We consider next respondent’s arguments with respect
to its laches and equitable estoppel affirmative defenses.
Respondent argues that the defenses apply “[b]ased on the
maxim that equity aids the vigilant and not those who
procrastinate regarding their rights” without further
explanation or evidence. Respondent also argues that
petitioner is estopped from claiming a date of first use
earlier than November 2003, again without further
explanation and evidence.
Cancellation No. 92049573
12
The elements of laches are (1) unreasonable delay in
asserting one's rights against another and (2) material
prejudice to the latter attributable to the delay. The
elements of equitable estoppel are (1) misleading conduct,
which may include not only statements and action but
silence and inaction, leading another to reasonably infer
that rights will not be asserted against it; (2) reliance
upon this conduct; and (3) due to this reliance, material
prejudice if the delayed assertion of such rights is
permitted. As applied in trademark cancellation
proceedings, these defenses must be tied to a party's
registration of a mark ….” Lincoln Logs Ltd. v. Lincoln
Pre-Cut Log Homes Inc., 971 F.2d 732, 23 USPQ2d 1701, 1703
(Fed. Cir. 1992).
Respondent has not explained, let alone made any
showing, of how petitioner unreasonably delayed in
asserting its rights and how material prejudice accrued to
respondent based on such delay. Nor has respondent
explained or shown that petitioner engaged in any
misleading conduct.9

9 A responding party may not rest merely upon the allegations or
denials of its pleadings, but must set forth specific facts, by way of
affidavit or as otherwise provided by Fed. R. Civ. P. 56, showing there
exists a genuine issue of material fact for trial. See Fed. R. Civ. P.
56(c) and (e). As indicated earlier in this order, respondent’s
exhibits were not properly introduced into the record. The evidence is
of the type that must be introduced by affidavit or declaration because
Cancellation No. 92049573
13
Thus, respondent has failed to establish either that a
genuine issue of material fact exists with respect to
petitioner’s claims in relation to such affirmative
defenses or that respondent is entitled to judgment in its
favor on such defenses as a matter of law. Here, the facts
deemed admitted leave us no genuine issues of fact that
would permit applicant to establish the defenses of laches
and equitable estoppel. (RFA’s 51-53). Accordingly, we
have given these defenses no further consideration.
In sum, we find on this record that no genuine issues
of material fact remain as to petitioner’s standing,
likelihood of confusion, and priority and that petitioner
is entitled to judgment as a matter of law. In view
thereof, petitioner’s motion for summary judgment is
granted, the petition to cancel is granted and respondent’s
Registration No. 3335851 will be cancelled in due course.
***

it is not self-authenticating. See Raccioppi v. Apogee, Inc., 47
USPQ2d 1368 (TTAB 1998); and TBMP §528.05 (2d ed. rev. 2004).
The Board notes that consideration of respondent’s submissions would
not have changed our determination herein.